Australian designs law is currently governed by the Designs Act 1906 (original Act). The new Designs Act 2003 (new Act) will come into force on 17 June 2004 and will govern all applications filed from that date. The new Act introduces a number of significant changes to Australian designs law.
The value of designs registered under the original Act is limited by difficulties that exist in pursuing infringers. The new Act is intended to increase the threshold of distinctiveness required to obtain an enforceable design registration, but should make it easier to prove infringement of the design registration.
The simpler registration process, the clearer and higher threshold for registrability, and the enhanced test for infringement should substantially assist designers in obtaining and using registered designs.
However, the reduced term, expanded prior art base and the new defence to infringement for spare parts might offset these advantages in some cases.
Importantly, design applications filed prior to 17 June 2004 can proceed under either the original Act or the new Act.
We believe that pursuing registration under the new Act will be desirable in most cases. However, we strongly recommend that each case be assessed on its merits.
The changes introduced by the new Act, as well as factors to take into account in choosing the best Act under which to pursue protection, are discussed below.
The principal changes are:
- registration for 10 years rather than the current 16 years
- a design must be 'new and distinctive' rather than merely 'new or original'
- a 'relative' novelty test will replace the current 'local' novelty test
- a broader infringement test of 'substantially similar in overall impression' will replace the current narrow test of 'fraudulent or obvious imitation'
- a 'spare parts' defence to infringement proceedings
- a design is registered without substantive examination, but the registration cannot be enforced until it is examined and certified by the Australian Designs Office
- a design application can be made for multiple designs and/or multiple products (see below).
Reduced term of registration
The new Act provides a maximum of 10 years protection for registered designs, while the original Act provides a maximum of 16 years protection.
Higher threshold of registrability
The new Act raises the threshold of registrability of the original Act by requiring that designs be new and distinctive from any design published in a document worldwide or publicly used in Australia. A design is considered to be new unless it is identical to another design and is distinctive unless it is substantially similar in overall impression to another design. Previously, design applications were only compared to designs published in a document or publicly used in Australia only.
The test of newness and distinctiveness is intended to raise the standard for registrable designs by giving greater weight to the similarities rather than the differences between a new design and the prior art. Until designs are examined under the new Act, it will not be known whether the Designs Office will give practical effect to the new registrability standard.
Multiple design/product applications now possible
A design application can now include more than one design in relation to one product, or one or more designs relating to multiple products if the design is a common design or if the products are in the same Locarno Agreement class. It is anticipated that the regulations will provide a tiered fee structure to cover multiple designs or multiple products in the one application.
This differs from the original Act, where applicants were required to file separate applications to obtain protection for more than one design relating to the same product.
Substantive examination not required for registration
The new examination provisions constitute a two-step process to achieve enforceable rights. Under the new Act, a design application will firstly undergo a formalities examination at the successful conclusion of which, the design is registered. Applicants will have the option of requesting examination at any time after the design has undergone the formalities examination. Additionally, third parties can request examination and lodge prior art material.
In line with the allegedly higher registrability standards during substantive examination, examiners will be required to give more weight to the similarities rather than the differences between a new design and the prior art. If the Registrar is satisfied that the design is valid, the registration is certified and becomes enforceable. This system is similar to the Australian Innovation Patent system.
Broader scope of protection
Infringement includes a range of activities, including making, importing, selling or hiring a product that is identical or substantially similar in overall impression to the registered design. Parallel importation is permitted. Before infringement proceedings can take place, the design must have undergone substantive examination. It is a groundless threat to allege infringement of a design that has not been certified.
The tests for registrability and infringement are now aligned. The comparison test for infringement under the new Act is the same test that is used in assessing distinctiveness of a design. Therefore, more emphasis will be placed on the similarities between the registered design and the alleged infringement than the differences. This change is intended to broaden the scope of what might constitute an infringement compared to infringement under the original Act but is yet to be borne out by the courts.
Spare parts exemption to infringement
Importantly, the 2003 Act introduces an exception to infringement where a person makes, imports, sells or hires component parts of a complex product for repairs of that complex product. This is known as the 'spare parts' exemption. Put simply, designs that are used in repairing products made up of two or more parts are exempt from infringement if the use is to restore the overall appearance of the product. At this stage, it is unclear how broadly this exemption will be applied by the courts.
Any designs registered under the original Act will continue to be assessed under the requirements of that Act for determining validity. In infringement, the comparison test of the original Act will continue to apply. The original Act will also apply to those registrations when considering whether the activities of an alleged infringer constitute infringing activities, and thus there will be no 'spare parts' exemption to infringement.
Transitional provisionals allow for any design application pending at 17 June 2004 to proceed under the original Act or to be converted to an application under the new Act.
Pursuing registration under the new or original Act?
The main factors to weigh up when considering whether to transfer pending applications follow.
Under the new Act:
- broader prior art base, but given global availability of many publications (eg via the internet) this might result in little practical difference with current Act
- intended to be easier to enforce, although this is yet to be tested in the courts
- can register several designs in the same application
- reduced period of protection, but many products are redesigned within 10 years anyway.
Under the original Act:
- easier to obtain registration because of narrower prior art base and lower threshold for registration
- longer period of protection
- spare parts exemption from infringement does not apply, so if design applies to a spare part it should be pursued under original Act.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.